Ex Parte Dunn et al

Patent Trial and Appeal Board

Jun 27, 2016

12580948 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/580,948 10/16/2009 MELISSA W. DUNN
45809 7590 06/29/2016
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
327694.01/MFCP.151435 1508
EXAMINER
NGUYEN, LEV
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
06/29/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MELISSA W. DUNN and
ABIGAIL AMY COLANDO
Appeal2014-008434
Application 12/580,948
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-008434
Application 12/580,948
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
13 and 15-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The invention relates to using personal information provided by a user
to an advertising system to create an advertising avatar for the user and to
select advertisements for presentation to the user along with the avatar
(Spec. i-f 4). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. One or more computer-readable media storing computer-
useable instructions that, when used by one or more computing
devices, causes the one or more computing devices to perform a
method comprising:
receiving personal information from a user at an
advertising system provided by an advertising system provider
that is paid by advertisers to deliver paid advertisements from the
advertisers, the personal information describing at least one of
the following: demographic information for the user, a
personality trait of the user, a like of the user, and a dislike of the
user;
storing the personal information in a user profile;
associating the user profile with an avatar ID;
employing at least a portion of the personal information
from the user profile to determine at least a portion of an
appearance of an avatar image for the user, the extent of features
included for the avatar image being dependent upon the amount
of personal information provided by the user as an incentive for
the user to provide information to the advertising system for use
in advertisement selection; and
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employing at least a portion of the personal information
from the user profile to select online advertisements from the
advertising system for electronic delivery to the user for
presentation of the online advertisements in a plurality of
different online advertising environments.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yamashita
Park
Yuen
Penney
US 2002/0133432 Al Sep. 19, 2002
US 2007 /0063999 Al Mar. 22, 2007
US 2007 /0101276 Al May 3, 2007
US 2011/0055745 Al Mar. 3, 2011
REJECTIONS
The Examiner made the following rejections:
Claims 1-13 and 15-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yuen and Yamashita.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yuen, Yamashita, and Penney.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yuen, Yamashita, Penney, and Park.
ANALYSIS
Claims 1, 2, 5-7, 9, and 10
Appellants contend Yuen is silent regarding "an advertising system
provided by an advertising system provider that is paid by advertisers to
deliver paid advertisements from the advertisers," as recited in claim 1 (Br.
8). Appellants further contend Yamashita is silent regarding the claim 1
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limitations "the extent of features included for the avatar image being
dependent upon the amount of personal information provided by the user as
an incentive for the user to provide information to the advertising system for
use in advertisement selection," and "employing at least a portion of the
personal information from the user profile to select online advertisements"
(Br. 9). Appellants also contend the combination of Yuen and Yamashita
does not disclose selecting advertisements for "a plurality different online
advertising environments" (Br. 9-10). We disagree with Appellants.
Yuen discloses a "Virtual World" in which stores on a "Main Street,"
for example, represent different Web sites a user can visit (Yuen, i-f 26; Fig.
1 ). For instance, the music store "Tower Records" may appear on the street
in Virtual World with its name featured on a storefront (id.). Moreover,
"Virtual World may contract with other Web Sites to 'rent out' store fronts
to them. Virtual World may charge rent in the form of up front payment,
monthly payment, and/or per transaction fee" (Yuen, i-f 50). We find Yuen's
Virtual World that rents out storefronts with companies' names meets the
claim 1 limitation of "an advertising system provided by an advertising
system provider that is paid by advertisers to deliver paid advertisements
from the advertisers." We are not persuaded by Appellants' argument that
"the web pages represented graphically in the virtual world in Yuen are not
advertisements but are merely web pages that a user may visit when surfing
the web" (Br. 8). Rather, receiving "rent" from businesses in exchange for
placement of their names on "storefronts" of a third party "Virtual World" is
indeed advertising.
We are also not persuaded by Appellants' argument that Yamashita is
silent regarding "the extent of features included for the avatar image being
dependent upon the amount of personal information provided by the user as
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an incentive for the user to provide information to the advertising system for
use in advertisement selection," as recited in claim 1 (Br. 9). Yamashita
discloses an electronic shopping system where a user inputs private
information relating to the face and figure, height, and other sizes of the
user, and the system superimposes a user image on a commodity image to
create a composite image (Yamashita, i-f 27). The composite image shows
"the appearance of the user who looks as if the user were trying on the
specified commodity (clothes in the case of PIG. 3)" (Yamashita, i-f 36). The
purpose of the composite image is to provide "a virtual experience which is
made to appear much closer to reality so that the user can easily and surely
determine whether a desired commodity which the user wants to purchase
suits the image which the user has" (Yamashita, i-f 10). We find one of
ordinary skill in the art would have understood that the more private
information a user provides as the basis for Yamashita' s composite image,
the closer the composite image reflects the user's actual appearance, thus
creating a better virtual experience of trying on clothing. This incentivizes
users to provide private information. Accordingly, we find Yamashita
teaches the claim 1 limitation "the extent of features included for the avatar
image being dependent upon the amount of personal information provided
by the user as an incentive for the user to provide information to the
advertising system for use in advertisement selection."
Although Appellants argue Yamashita is also silent regarding
"employing at least a portion of the personal information from the user
profile to select online advertisements," as recited in claim 1 (Br. 9), the
Examiner in fact relies on Yuen for this limitation, not Yamashita (Final
Act. 3). Specifically, the Examiner cites Yuen's paragraphs 26 to 32, which
provide, in part, "[f]or example, a Music Store (i.e., 'Tower Records,' which
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may be operated by a separate Web site), may be the nearest store to person
D, because person Dis a music lover" (Yuen, i-f 26). We agree with the
Examiner and find this disclosure teaches the claim 1 limitation "employing
at least a portion of the personal information from the user profile to select
online advertisements," because whether a person is a "music lover" is
personal information from a user profile and, as discussed above, we find the
named storefronts in Yuen's Virtual World to be "advertisements."
We are also not persuaded by Appellants' argument that Yuen and
Yamashita do not disclose selecting advertisements for "a plurality different
online advertising environments" (Br. 9-10). In the claim 1 limitation "to
select online advertisements from the advertising system for electronic
delivery to the user for presentation of the online advertisements in a
plurality of different online advertising environments," the presentation in "a
plurality of different online advertising environments" is merely an intended
use for selected advertisements. That is, claim 1 does not specifically
require the advertisements actually be presented in the "plurality of different
online advertising environments." Accordingly, we do not give this
language patentable weight in determining whether the Examiner erred in
finding claim 1 obvious over Yuen and Yamashita.
Nevertheless, even if we were to consider the language "a plurality of
different online advertising environments," we find Yuen teaches this
feature. Claim 1 does not specifically define what constitutes an "online
advertising environment," but in light of the Specification we broadly but
reasonably construe it to mean any application in which an online
advertisement can appear (see Spec. i-f 45). Yuen discloses "the invention
could be used with existing markup languages and applicable programs in
conjunction with available browsers provided by Microsoft and Netscape,
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for example" (Yuen, i-f 18). Accordingly, we find Yuen meets the claim 1
limitation "for presentation of the online advertisements in a plurality of
different online advertising environments," because Yuen's advertisements
are capable of being presented in different browser applications.
We are, therefore, not persuaded the Examiner erred in rejecting claim
1, and claims 2, 5-7, 9, and 10 not specifically argued separately.
Claim 3
Appellants contend Yuen does not teach a taxonomy that is "used by
application developers to describe a context of applications in which
advertisements are placed and site publishers to describe a context of sites in
which advertisements are placed," as recited in claim 3 (Br. 10-11 ). We
disagree with Appellants. Yuen discloses user preferences, for example,
"musical preferences such as rock, jazz, classic, instrumental, or vocalist,"
which are used to determine which advertisements to present to a user
(Yuen, i1i128, 30). We agree with the Examiner (see Ans. 16) and find these
preference categories represents a taxonomy and meets the argued claim 3
limitation.
We are, therefore, not persuaded the Examiner erred in rejecting claim
3.
Claims 4
Appellants contend Yuen does not teach allowing a user to add a new
element to a taxonomy and providing the new element as part of the
taxonomy provided to other users and advertisers, as recited in claim 4 (Br.
11). We disagree with Appellants. As discussed above regarding claim 3,
we find Yuen discloses a taxonomy of user preferences that is used to select
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advertisements for a user. This taxonomy can be based on a questionnaire
completed by a user (Yuen, i-f 28). We find one of ordinary skill in the art
would have understood that a user's questionnaire response not already part
of the taxonomy would meet the limitation of adding a new element to the
taxonomy.
We are, therefore, not persuaded the Examiner erred in rejecting claim
4.
Claim 8
Appellants contend Yuen does not teach "providing credit to the user
for interacting with an advertisement, wherein the credit is useable by the
user to obtain further accessories and actions for the avatar image," as
recited in claim 8 (Br. 11-12). We disagree with Appellants. As the
Examiner finds, Yuen discloses a Virtual Currency that is used to purchase
goods and services in the Virtual World (Ans. 16; Yuen, i-f 48), which meets
the claim 8 limitation of "credit ... useable by the user to obtain further
accessories and actions for the avatar image."
We are, therefore, not persuaded the Examiner erred in rejecting claim
8.
Claims 11-13 and 15-19
Appellants contend "Yuen is silent regarding advertisements and as
such, does not teach or suggest selecting an advertisement based on personal
information from a user as in claim 11" (Br. 12). Appellants further contend
that in Yuen "there is no determination that an avatar is to be presented in an
advertisement and responsive to that determination, providing an avatar
image or indication that an avatar image is to be presented within the
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advertisement as in claim 11" (id.). Appellants also contend that "there is
nothing in Yamashita that indicates a determination is made to include a
user's image in an advertisement based on determining the advertisement
allows for user interaction" (Br. 13).
Regarding Appellants' first argument, we find Yuen teaches selecting
an advertisement based on personal information, as discussed above
regarding claim 1. With respect to Appellants' second argument, we agree
with the Examiner (Final Act. 7) and find Yuen discloses determining that
an avatar is to be presented within an advertisement. For example, Yuen
shows icons-i.e., "avatars"-in the Virtual World surrounded by
storefronts-i.e., "advertisements" (Yuen, Fig. 1 ). Finally, regarding
Appellants' last argument, we also agree with the Examiner (Ans. 16-17)
that Yuen, not Yamashita, teaches the feature of determining whether an
advertisement allows for user interaction. Specifically, Yuen discloses a
user is presented with stores in the Virtual World based upon "Customized
ivietrics" which "may change if a person's preferences changes, or for any
other reason, such as the fact that he has already visited a certain store many
times, or is 'banned' from a store, etc." (Yuen, ,-r 21). We find Yuen's
presenting a user with a store if it matches the user's preferences, but not
presenting the user with a store if that user has been banned from the store
meets the claim 11 limitation of presenting an advertisement "based on a
determination that the advertisement allows the user to directly interact with
the advertisement." In other words, Yuen's user icon would not be able to
interact with a store-i.e., "advertisement"-from which the user has been
banned, and thus the user icon would not be presented with that store.
We are, therefore, not persuaded the Examiner erred in rejecting claim
11, and claims 12, 13, and 15-19 not specifically argued separately.
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Claim 20
Appellants contend the combination of Yuen, Yamashita, and Penney
fails to disclose the claim 20 features of "communicating an avatar widget to
a user device ... ,""receiving from the user device, a request for an
advertisement ... ," "selecting an advertisement ... ," "determining that the
advertisement is configured to allow user interaction with the
advertisement," "based on the determination ... retrieving the avatar
image," and "providing the advertisement and the avatar image to the user
device ... "(Br. 13-14).
We are not persuaded by Appellants' arguments for the same reasons
as the similar arguments discussed above regarding claims 1 and 11.
Additionally, regarding Appellants' argument that "[a] displayed object as
described in Penney is not an avatar widget that includes code for causing a
user device to interact with a remote advertisement platform and that also
acts as a container for storing an avatar ID on a user device," we agree with
the Examiner that the combination of the references discloses this feature
(Br. 13). Penney discloses "Server 106 can also provide for the creation of
an individual's avatar/widget for display on user's mobile or like computing
device 104" (Penney, i-f 49). Moreover, Penney discloses the avatar/widget
can be "used with avatars/widgets in virtual worlds" (Penney, i-f 61 ). We
thus agree with the Examiner that Penney's widget in combination with
Yuen's Virtual World meets the argued limitation (see Final Act. 12; Ans.
17).
We are, therefore, not persuaded the Examiner erred in rejecting claim
20.
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Claim 21
Appellants contend Park does not teach "wherein the avatar image is
based in part on an existing avatar from a gaming system," as recited in
claim 21 (Br. 15). We disagree with Appellants. As the Examiner finds,
Park discloses an avatar that may engage in games through an online portal
(Ans. 17; Park, i-fi-121, 23). Accordingly, Park's avatar for use in the online
portal (see Park, i-f 19) can be based on an avatar from a "gaming system," as
recited in claim 21.
We are, therefore, not persuaded the Examiner erred in rejecting claim
21.
CONCLUSION
The Examiner did not err in rejecting claims 1-13 and 15-21under35
U.S.C. § 103(a).
DECISION
For the above reasons, the Examiner's rejections of claims 1-13 and
15-21 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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